+ Trade Marks and Colours

Presented at the

Franchise Council of Australia

Breakfast Seminar

  on 8 December 2004

 

Since 1995, colours have been able to be registered as trade marks in Australia.

Trade marks act as an identifier of the source of goods or services. Just as the linking ovals tell the passer-by that he or she is looking at a Toyota motor car, so does the three-pointed star tell the passer-by that he or she is looking at a Mercedes-Benz.

As background, before we canvas the issue of colours, you should be aware that trade marks have to be:

1. Distinctive. A viewer can identify the National Australia Bank “Star” and he or she can identifier the Caltex “Star” but when he or she sees one he or she does not think of the other.
2. Trade marks can not be decorative. The curly red ribbon on the word Coca or on the word Cola indicates to the viewer that the product is Coca Cola and not some other Cola. The ribbon is not merely decorative, it is distinctive.
3. The trade mark can not be descriptive. You can have an Apple “computer” but you can not have an Apple “apple”.

Enter Cadbury Schweppes (Cadburys) who in 2002 sought to register the colour “purple” for chocolate and chocolate confectionary. Cadburys had an argument with Darrell Lea and sought to register the colour purple as a trade mark. Cadburys had to prove that at the date that the trade mark application was filed, the colour purple was distinctive – that is, that it was associated exclusively in the minds of consumers with Cadburys’ goods in the marketplace. Said another way, Cadburys had to show that in addition to purple having its primary meaning of a nice colour for confectionary, “purple” in the eyes of consumers , meant “Cadburys”.

Cadburys had been using the colour purple in packaging since 1905. It filed evidence of this and also caused a market survey to be undertaken as to what people thought of when they saw the colour purple in association with confectionary. The survey supported Cadburys’ argument that people thought of Cadburys when they saw chocolate purple wrappers.

But there was no evidence of Cadburys pushing this association. There was no marketing campaign using slogans along the lines of “When you see the purple wrapper, you know it’s Cadburys” or, “Think purple, think Cadburys”. Cadbury’s use was passive and not active.

Cadburys simply wrapped their chocolates in purple wrappers for many decades.

The court was not satisfied that Cadburys had used the colour as a badge of origin - they just wrapped their chocolates in purple wrappers. There was no other association.

As to the survey, Cadburys made the big mistake of running a huge marketing campaign at the time the survey was undertaken which totally discredited the survey in the mind of the court. It was not taken into account. Cadburys application to register the colour purple as a trade mark failed.

In 2004, BP sought to register the colour green for fuels, service stations and car washes. Woolworths had other ideas. Woolworths wanted the colour green because Woolworths, “the fresh food people”,   were moving quickly into marketing the sale of their groceries in service stations. Woolworths felt that BP’s application for the green trade mark, if successful, would severely hamper its proposed foray into the service station market.

The Court again said that the colour must have this “secondary meaning” that is, an exclusive association in the eyes of the consumer with a product or service, before it can have the necessary “distinctive quality” to become a registered trade mark.

BP had been using green only since 1927, but in 1989 it introduced a new design for its service stations, which included a green colour scheme. It promoted itself extensively using this green – for example, one of its marketing lines over the period since 1989 was “At BP, the new green stations keep the wheels turning for more and more motorists each day”.

It also gave evidence of a survey which showed that 87% of people surveyed identified service stations colour green as those of BP.

In October 2004, BP was allowed to register the colour green as a trade mark.

So what and who cares? Well…

1. You can register a colour as a trade marks;
2. If you want to do so, distinctiveness, being this secondary meaning that the Courts talk about, may take a long time, even years, to build;
3. Passive use is not enough. An active marketing campaign promoting the association is required;
4. Don’t undertake marketing campaigns when you are undertaking market surveys for use in court.